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Whereas at one time, inventions could be characterized as
falling squarely within one field, inventions may now cross the
boundaries of numerous fields. This trend is also observed in
litigation. A 2012 decision of the Federal Court of Canada confirms
the boundaries between fields of art have indeed blurred.
In Eurocopter v. Bell Helicopter Textron Canada
Limitée, 2012 FC 113, the defendant was successful in
invalidating claims directed to a helicopter landing gear based on
a lack of sound prediction defence.
While the lack of sound prediction defence is common in
proceedings involving inventions in the pharmaceutical field, it
was not previously considered as an effective strategy in the case
of a mechanical invention such as helicopter landing gear.
The Federal Court concluded that "an explicit promise to
reduce drawbacks of prior art 'significantly'" had
been made. The drawbacks were identified as:
Elevated acceleration factors upon landing (load factors);
Difficult frequency adaptation with respect to ground
resonance; and
High landing gear weight.
The Court concluded that this "is the promised utility of
the disclosed invention."
The Court held that the patentee had failed to provide enough
evidence to establish the claims at issue had a demonstrated
utility, or that they were based on a sound prediction.
As a result, a number of claims were invalidated because, based
on the promised utility, there was no demonstrated utility or
otherwise sound prediction of utility in the description.
While the decision is currently under appeal, the take-home
lesson for now is that inventions in the mechanical or IT fields
are not immune from attacks on their validity based on grounds such
as sound prediction. Accordingly, care must be taken in drafting
patent applications to ensure that statements that could be
construed as being directed to the promised utility of the
invention are kept to a minimum, and that the bar of promised
utility is set as low as possible.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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